Micronair (Aerial) Limited v. Waikerie Co Operative Producers Ltd.

[1989] APO 20

In the Matter of the Patents Act 1952

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In the Matter of Patent Application No. 538772 in the Name of MICRONAIR (AERIAL) LIMITED

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In the Matter of Opposition thereto under Section 59 by WAIKERIE CO‑OPERATIVE PRODUCERS LTD.

DECISION OF AN ACTING ASSISTANT COMMISSIONER OF PATENTS:
Background
         Application No. 56147/80 was lodged on 5 March 1980 by Micronair (Aerial) Limited for a patent for an invention entitled "Spraying Apparatus".  The application is a Convention application claiming a priority date of 29 August 1979.  Acceptance was advertised on 30 August 1984 and the application was given the serial No. 538772.  A notice of opposition was lodged on 27 February 1985 by Waikerie Co‑operative Producers Ltd.; the grounds of opposition were those specified in paragraphs (c) and (e) to (i) of sub‑section 59(1), although only matters relating to novelty, obviousness and section 40 were pursued by the opponent.  The opposition was heard in Melbourne on 17 February 1989; Mr B. Caine of Counsel, instructed by Mr R. Cross, patent attorney, appeared for Micronair and Mr R.K. Maddern, patent attorney, appeared for Waikerie.

The Specification
         The specification indicates that the invention relates to spraying apparatus, for use in the distribution of chemical aids to crops.  The features of the invention are defined in a consistory statement and in the claims.  The consistory statement and claim 1 are substantially identical, and the latter reads as follows:

"1.Spraying apparatus comprising an axial fan situated within a cowl shaped aerodynamically to control a blast of air generated by the fan, the fan including a plurality of blades mounted on a rotatable hub, means coupled to the fan hub to transmit a rotating drive thereto, a rotatable atomising element coaxial with the fan and mechanically coupled to the fan so that the rotating drive to the fan also effects rotation of the atomising element, and means for delivering a liquid to be sprayed to the atomising element, whereby rotation of the atomising element disperses the liquid outwardly in the form of droplets, said droplets being further dispersed by the blast of air from the fan passing over the atomising element."

Evidence
         The opponent's evidence consists of declarations from nine people; I shall now refer to the more significant parts of that evidence.
         Australian patent No. 449483 in the name of Ring Around Products, Inc., published in 1973, is included with a declaration from Duncan Beaton, general manager of the opponent company.  Mr Beaton says "that I have for many years been aware of the general usage in Australia of SPAN SPRAY equipment wich is substantially as described in Australian Patent 449483."
         The patent relates to ground‑based spraying apparatus, the inventive concept therein being similar to that of the applicant's invention; for example, claim 1 of patent No. 449483 reads as follows:

"An improved spraying head for use in a spraying system comprising, in combination:

(a)an impeller means rotatably mounted on said spraying head and detailed for developing directed streams of air pressure;

(b)an annular perforated diffusion member supported on said impeller such that said directed streams of air pressure pass axially over the outer surface of said diffusion member;

(c)a dispensing nozzle including an elongated tubular member having a closed end with an opposite end in flow communication with a supply of fluid chemicals, said dispensing nozzle including a series of radially extending orifices detailed for dispensing a supply of fluid chemicals into said diffusion member to be directed by centrifugal force out through said annular perforated diffusion member and into said streams of air pressure;

(d)means mounting said dispensing nozzle on said spraying head in such a manner that said dispensing nozzle is coaxial with and extends through said rotatable impeller means; and

(e)said rotatable impeller means including a rotatable driving member coaxially mounted relative to said rotatable impeller means."

The description of the spraying head of the patent, on pages 17 and 18 and in figures 5‑9, refers to a safety guard surrounding the rotary impeller to prevent damage thereto.  The safety guard shown is a narrow circular band supported by a series of radially projecting brace members.  There is no reference in the specification of the patent to any means to allow adjustment of the pitch of the impeller blades.
         A declaration by Dudley George Ward, vineyard manager, refers to his purchase of Span Spray equipment in 1978 and in 1979.  Exhibits accompanying the declaration comprise photocopies of order documents for the equipment, two photographs of the equipment and a photocopy of the Span Spray Operator's Manual, model 542.  The apparatus shown in the photographs and the manual appears to be essentially the same as that shown in patent No. 449483.  I note that there is no indication of the publication date of the manual nor the date on which it was obtained by Mr Ward.
         A declaration by Keith Uppill Furness compares the Span Spray equipment with the claims of the Micronair specification.  Mr Furness states that he is "interested in spraying devices for agricultural purposes", that he was the inventor in the matter of two Australian patent applications and a corresponding U.S. application and that the Australian applications have been assigned in part to the opponent.  The exhibits accompanying the declarations are further photographs of Mr Ward's Span Spray equipment, showing some detail thereof.  The spraying head shown in these photographs was presented at the hearing.
         Mr Furness deposes that all the features of claim 1 of the applicant's specification are disclosed in either the photographs, the operator's manual or patent No. 449483.  He regards the safety guard of the Span Spray equipment as a "cowl", viz:

"The fan is stated to be within a cowl, and a cowl is designated by the number 190 in said specification 449,483, although as shown in that specification the cowl 190 is not shaped aerodynamically even though it controls a blast of air generated by the fan.  However it is common practice in the art of spraying apparatus to use cowls which are so shaped to control a blast of air generated by a fan."

I note here that Mr Furness' use of the present tense leaves some doubt as to the state of common practice at the priority date.  With regard to the other claims of the applicant's specification, Mr Furness deposes that the features therein are either shown in the material cited or are matters of common practice.  In paragraph 8 of his declaration he states:

"It is common practice to use fan blades, the pitch of which are adjustable and which are contained in aerodynamically shaped cowls, although such an arrangement is not advantageous in the apparatus of the type described and illustrated in said specification.  It has been avoided in the [Span Spray] equipment and has been avoided by me in the apparatus [of his own patent applications]."

Again, this statement leaves some doubt as to what was common practice at the priority date, and it is not clear why the said "arrangement" in the applicant's apparatus "is not advantageous" in the Micronair apparatus.
         A declaration by Desmond Charles Bourke, managing director of UR Machinery (Sales) Pty. Ltd. in Mildura, provides further evidence that Span Spray equipment was sold in 1978 and that such equipment was manufactured in accordance with patent No. 449483.
         Declarations by David Peter Logos and others relate to spraying equipment manufactured by Silvan Pumps & Sprayers (Aust.) Pty. Ltd.  Mr Logos, manager of a primary producers business in South Australia, declares that for a period of approximately six years he owned and operated a Silvan sprayer and in 1984 he "purchased another similar spraying machine".  He describes some features of the machines:

"These machines had, inter alia, fan blades which were adjustable for pitch and which rotated within an aerodynamically shaped shroud to create an air blast which carried with it spray issuing from the spray heads."

The exhibits accompanying Mr Logos' declaration comprise photographs of the later machine ("the earlier machine having been sold"), documents relating to the purchase of the original machine indicating the date of delivery as 5 July 1978, and a photocopy of a maintenance instruction manual received with the original machine.  It is clear from the manual that the fan blades are such that the pitch can be varied and I note that surrounding the fan there is a part (No. 53) described in the manual as a "complete cowling".  However, the liquid dispensing arrangements on the Silvan sprayer, which involve a set of fixed nozzles in a radial air blast, are substantially different to the rotating atomising element of the applicant's invention.
         The other declarations relating to Silvan sprayers provide evidence that models were advertised in publications such as the Australian Citrus News and the Weekly Times in 1978.  The advertisements, which include photographs, refer to the variable pitch fan and show the cowling around the fan.
         In his declaration presented in evidence, Anthony David Colliver states that he has no interest in either of the parties involved in the opposition, that he is Chief Engineer of F.F. Seeley Nominees Pty. Ltd. of South Australia and that he is regarded as an expert in fan design in the air conditioning and fan industries.  He comments on the following matters:

(i)Re the meaning of "control" in claim 1 of the applicant's specification:

"The words "control a blast of air generated by the fan" could mean to me any one of a number of different controls.  It could mean for example the control of direction of airflow (as in the case of Silvan product referred to by Mr Logos), it could mean control of the degree of smoothness of acceleration and deceleration of the air (a major factor in the design of the shroud of a ducted fan) ..."

(ii)Re the Silvan fan and the meaning of "aerodynamically":

"... I do not agree that the shroud of the Silvan fan cannot control flow of air.  I would agree that it cannot control that flow aerodynamically, neither can the shroud which is described and illustrated in the Patent Application 538772."  He refers to the Australian Macquarie Dictionary defining "aerodynamics" as "the study of air in motion and of the forces acting on solids in motion relative to the air through which they move."

(iii)Re adjustable pitch blades:

"To my knowledge the use of adjustable pitch blades is common."

(iv)Re the significance of the length of the cowl:

"The Patent specification 538772 does not appear to contain limitations of upstream length of shroud for the ducted fan, and I reject the statement [that the length of the cowl in the applicant's invention constitutes the necessary aerodynamic shaping to control the airflow].   This is not consistent with my experience, and in any case I could find nothing in the said specification which indicated to me that there was any "aerodynamic shaping to control the airflow."

(v)Re a statement that the safety guard in patent 449483 was incapable of acting as a cowl":

"Obviously this statement is incorrect having regard to the proper meaning of the word "cowl"."

He refers to the Australian Macquarie dictionary defining the word "cowl":

"3. a hood‑shaped covering for a chimney or ventilating shaft, to increase the draught,

5.a cowling, and the word "cowling" is defined as 'a streamlined housing for an aircraft engine, usually forming a continuous line with the fuselage or wing'."

(vi)Re the matter of whether it was common practice in the art of spraying apparatus to use cowls so shaped to control a blast of air generated by a fan, Mr Colliver exhibited to his declaration photocopies of extracts from several fan engineering textbooks, which he deposes demonstrate such common practice.  Most of the textbooks referred to were published and available in Australia before the priority date of the claims of the applicant's specification.

A declaration by Richard Kenneth Maddern, patent attorney, includes copies of three Australian patent specifications, published before the priority date of the Micronair claims, viz:
         No. 141263, Leonard Charles Pearch,
         No. 262374, Birfield Engineering Limited, and
         No. 71824/74, Berthoud S.A.
These patents are directed to crop spraying machines using axial flow fans, and all three patents describe and show parts of substantial length surrounding the fan and which are described as "a guide tunnel or casing " (141263), "four cowlings which taper in the downstream direction ... to form a duct." (262374) and "a tubular casing" (71824/74).
         The applicant's evidence consists of two declarations by Robert James de Laine, a consulting engineer with some agricultural engineering experience.  He comments on the applicant's invention and the opponent's evidence as follows:

(i)Re the Silvan equipment: Dr de Laine deposes that the applicant's invention is distinguished by the rotating atomising element and the cowl shaped aerodynamically.  He emphasises the length of the cowl shown in the drawings of the applicant's invention, points out that the shroud around the Silvan fan is shorter than the applicant's cowl and concludes:

"In my opinion this shroud is, in reality, only a safety housing and the absence of any significant length thereof at the air inlet side of the fan causes the air to be drawn by the fan from all directions, from axial to radial, such that the shroud cannot aerodynamically control the air.  Due to this lack of control of the air flow upstream of the fan, the air blast downstream will also be uncontrolled.  As a result of this uncontrolled air blast, and the fact that the liquid spray is produced from a limited number of fixed spaced spray heads, the spread of spray droplets by the apparatus will be comparatively uneven, with the result that to achieve a given coverage of the total volume of liquid used is likely to be significantly greater than would be the case if even droplet distribution could be achieved."

(ii)Re a rotatable hub: Dr de Laine suggests that Mr Furness has not clearly identified in the Span Spray equipment a rotatable hub on which the fan blades are mounted, as defined in claim 1 of the applicant's specification.

(iii)Re the cowl disclosed in AU patent No. 449483: Dr de Laine asserts that the safety guard surrounding the impeller in patent No. 449483 "would be incapable of acting as a cowl" because of "its extremely limited axial extent" and that it could not "control a blast of air generated by the fan" since, as indicated on page 17 of the patent, a function of the spray head is to "develop a blast of air" around the diffusion chamber for forcing droplets "in a radially and axially extended direction therefrom".

(iv)Re common practice in the art of spraying apparatus:

Dr de Laine considers that it was not common practice to use cowls shaped to control a blast of air generated by a fan at the priority date of the applicant's claims, nor was it common practice to use fans with adjustable pitch.

Submissions
Mr Maddern submitted that the applicant's invention was obvious in the light of common knowledge at the priority date and that the Silvan and Span Spray products were both well known in the field of agricultural spraying. He referred to the judgements in Minnesota Mining & Manufacturing Co. & Anor. v. Biersdorf (Australia) Ltd. (1980) 144 CLR 253 and Sami S. Svendsen Inc. v. Independent Products Canada Ltd. (1968) 119 CLR 156. He also submitted that the applicant's specification does not comply with section 40 because the phrase "cowl shaped aerodynamically" has not been defined and because appended claims 3, 6, 8, 9, 10 and 11 are not fairly based.
Mr Caine submitted that there is invention in the features claimed and that the claims are directed to achieving the object of the invention which is to form a blast of air from the ground‑based spraying apparatus equivalent to a blast from airborne apparatus. On the matter of common general knowledge and Mr Colliver's evidence, Mr Caine suggested that agricultural spraying and fan engineering are not kindred industries and that the inventor in this case would not have sought assistance from the fan industry to develop his invention. He referred to the judgement in Proctor & Anor. v. Flo‑Con Pty. Ltd. & Ors. (1984) 4 IPR 187 at 198. He also questioned the qualifications of some of the opponent's experts.
Decision
         I will deal first with Mr Maddern's allegation that the invention is obvious.
         In the determination of obviousness, no disclosure may be used unless shown to be part of the common knowledge of the persons skilled in the particular art(s) concerned.  (See Minnesota Mining & Manufacturing Co. v. Biersdorf, supra).  In this action, there is contradictory evidence about some of the material which might form part of such common knowledge : further, as Mr Caine rightly pointed out, some of the opponent's evidence about use of fan sprayers is less than satisfactory.  As to the nature of that art, Mr Caine also made submissions (supra).  For a number of reasons, I find I cannot agree with those submissions.  Firstly, the art encompassing the invention in suit could, in the main, be simply described as "agricultural engineering", and I note that for some considerable time now various tertiary institutions in this country have offered courses so designated.  Secondly, the courts have held that a specification is addressed to those who would normally have to act on it.  In this case where the invention includes the provision of a fan arrangement to provide a blast of air in substitution for the air blast present with aerial use of the spray equipment, it would be ridiculous to conclude that the addressee would not be expected to have some knowledge of fans and fan engineering.  Thirdly, the lack of description in the specification of any details, problems or even advantages associated with the use of the ducted fan arrangement leads to the conclusion that the applicant expected the addressee to fully understand these matters.
         While it is not entirely clear from the evidence, it is clear from various texts that fans enclosed in ducts and having variable pitch blades have been part of the common knowledge in general engineering for several decades I find it inconceivable that such fans would not be part of the common knowledge of experts in the field of the present invention.  On the other hand, there is no satisfactory evidence on file showing that agricultural spraying equipment having a rotatable atomising element co‑axial with, and coupled to the fan, constitutes part of the common knowledge.  This being so, I reject the allegation of obviousness.
         On the question of novelty, the most relevant single piece of evidence on file is the specification of Patent No. 449483, which discloses all features of claim 1 of the present invention excepting the feature that the fan is "situated within a cowl shaped aerodynamically to control a blast of air generated by the fan".  In order to determine whether this feature contributes novelty to the claim it is first necessary to review the specification to determine what the expression means, and what significance it has in relation to the invention.  The first page of the description includes a simple introduction stating the nature of the invention broadly as spraying apparatus for crops.  It then goes on:

"The application of chemical liquids to crops from aircraft by a rotary atomiser has been disclosed by E.J. Bals and F.R.J Britten in British Patent Specification No. 860819.  In the method described in that specification the blast of air produced by the movement of the aircraft through the air is an essential part of the method of distribution of the chemicals being sprayed.  When, however, a rotary atomiser is mounted on the ground or, for example, on a farm tractor, such a blast of air is absent.  The invention sets out to provide spraying apparatus, suitable for use on the ground, which can operate in similar fashion to the above‑mentioned airborne apparatus."

This paragraph leads to the conclusion that the invention is concerned with using a rotary atomiser as a ground based spray, and that the problem is to find a manner of providing the air blast, which is inherent in the aerial use.  In the specification, the consistory statement immediately follows, and it is substantially identical to the definition of the invention in claim 1 (see above).  At page 6, the following description appears:

"An advantage of a spraying unit having rotary atomisation is that an even droplet spectrum is obtained even when extremely low volumes are being sprayed.  This, in combination with an air blast to distribute the droplets allows concentrated chemical liquids to be spread evenly resulting in a reduction in volume applied for a given coverage."

Again, it seems from this description that the provision of means to produce an air blast, in combination with rotary atomisation is the essence of the invention.  The only other description which is possibly of assistance in determining the nature of the invention in its broadest form also appears at page 6, as follows:

"The invention is not limited to the application of chemicals to crops.  For example a free standing unit having one spraying head may be used in an enclosed space for humidification, fumigation or any other application where a fine and even droplet spectrum by spraying is required."

However this statement is more concerned with an advantage of the apparatus of the invention, i.e. "fine and even droplet spectrum", and its consequential other uses than it is with the essential construction thereof.  The remainder of the description relates to the embodiment.  The only portion which concerns the cowl reads as follows:

"The axial fan 23 rotates within the downstream end of a cowl 26 shaped aerodynamically to control the air blast generated by the axial fan 23.  The cowl 26 is supported, concentric with the axial fan 23, by the strut 20 and the adjustable support 14.  To obtain conveniently the double curvature shape of the cowl 26 it is made of glass reinforced plastics."

It is to be noted that none of the description leads to any conclusions about the meaning of the expression under consideration that could not be made from the expression itself.
         Furthermore, even though the expression has been included in claim 1, there is no disclosure anywhere in the specification that it constitutes a feature of any significance in relation to the inventive concept.
         Coming now to the meaning of the expression, I find no problem with the word "cowl" ‑ a cowl has a function such as a housing or cover, and in the context of this specification, it is clearly required to be an open ended cover, i.e. a duct.  (While on this point I comment that the citation discloses an "annular rim" about the periphery of the fan which could hardly be described as a cowl, and which, on balance of the evidence, would appear to be no more than a safety guard for the fan.)  The requirement that the cowl be "shaped aerodynamically to control a blast of air" was the source of some disagreement between the parties.  "Aerodynamics" is the branch of dynamics that deals with the motion of air and other gases and with the forces acting on bodies in motion relative to such fluids.  The word does not imply streamline flow.  It is well known that unenclosed rotating fans generate a "swirling" pattern of air flow having substantial axial and radial components of motion.  Where the fan is enclosed in a duct or a cowl as here, the "swirling" pattern is still evident in the air flow leaving the duct, but it has lesser components of motion radially than if the fan were unenclosed.  If it is desired to minimize the "swirling" pattern with a ducted fan, "straightener" vanes are used in the duct upstream or downstream (or both) of the fan.  No such vanes were used in the invention in suit, presumably as their effect would inhibit proper mixing of the spray droplets in the airstream.  Consequently, the word "aerodynamically" adds nothing to claim 1, the "cowl" is no more than a standard fan‑duct (as is illustrated in Figure 1 of the drawings), and the "control" of the blast of air is a well known effect, neither more nor less than the skilled person would expect from use of such a duct.  However, I do not consider the expression to be unclear, as submitted by Mr Maddern.
         In summary the spraying apparatus of claim 1 differs from that disclosed in Patent No. 449483 only in enclosing the fan in a known duct : no particular difficulty has been overcome in using the duct, and if there is any improvement in the blast of air (there is no evidence on this point) then such improvement is no more than what the skilled person would expect; and finally the description attributes no importance to the duct.  Consequently, I think the ducting arrangement of claim 1 falls into that category which the Federal Court was pleased to call a workshop variation.  In my view therefore, claim 1 fails for want of novelty.
         I have previously indicated that ducted fans having variable pitch blades are common knowledge.  Consequently claim 2 also lacks novelty.  It seems to me in fact that there is little else in the remaining claims not disclosed in Patent No. 449483.
         Finally, I note that claim 10 of the applicant's specification is not clear when appended to earlier claims other than claim 6 since the "unitary structure" is only referred to in claim 6.  Claim 10 therefore does not comply with section 40.
Conclusion
         I have found that the opposition is successful on two of the grounds specified in the notice of opposition, i.e. want of novelty, and failure to comply with section 40.  I cannot say for certain that there is no patentable subject matter disclosed in the specification and consequently I allow Micronair 60 days from the date of this decision to propose amendments to cause the specification to claim any such matter.
         I award costs against the applicant.

(J.L. ROVETA)

Patent attorneys for the applicant: Phillips Ormonde & Fitzpatrick,
  Melbourne
Patent attorneys for the opponent : R.K. Maddern & Associates,